776 of the Jan-Feb 2009 ex parte decisions show-up in the Westlaw database. Those 776 decisions were authored by 78 different Administrative Patent Judges. During the two month period, four judges penned more than 25 opinions, although the average is closer to 10 opinions. (If we assume that Westlaw includes 80% of the opinions, then the average jumps to 12 opinions in the two months – or six opinions per month). On an annualized basis this extrapolates to authoring an average of 72 opinions per year. Of course, this average includes opinions by BPAI administration who regularly write only a small handful of decisions. Excluding those individuals pushes the extrapolated average to about 75 opinions per year for each BPAI Judge handling ex parte cases.

These numbers are comparable to the Court of Appeals for the Federal Circuit. Each of the twelve Federal Circuit judges (not counting Senior Judges) wrote about 28 majority opinions in 2008. In addition, each Federal Circuit judge participated in over 400 cases (most of which were decided without opinion). Thus, while the BPAI judges write more opinions, the Federal CIrcuit judges actually decide more cases.

Notes:

• The lower number of cases found in Westlaw is due – in part – to the fact that many of the cases being appealed are unpublished. In those cases, the BPAI decisions are kept secret. In addition, for some reason, Westlaw is not picking up all of the released BPAI decisions. Still, the Westlaw format is easier to use than the BPAI PDF.

Like examiners, BPAI judges have a count system. BPAI Judges are expected to sit on about 300 panels per year and draft about 100 opinions. In the past, judges would receive credit for drafting full dissents and concurring opinions. That has changed. In an internal email, BPAI Vice-Chief Jay Moore has indicated that these extraneous opinions will no longer ordinarily garner any credit. According to Vice-Chief Judge Moore, "[c]oncurrences, dissents, and remands are not normally efficient mechanisms for securing the 'just, speedy, and inexpensive' resolution of an appeal before the Board." The e-mail is reproduced below:

====

From: Moore, James T
Sent: Thursday, May 07, 2009 9:57 AM

To: All BPAI Judges
Cc: MacDonald, Allen; Fleming, Michael R.; Santiago, Amalia

Subject: Policy Clarification on Dissents, Concurrences and Remands

Importance: High

Colleagues:

Please note that, effective immediately, if you would like a dissent, concurrence, or remand to be considered towards your productivity totals, you must submit a request. The form is attached, and may be used retroactively for cases prior to this date. For cases after this date, it must be submitted to your Vice Chief Judge within one week of mailing of the dissent, concurrence, or remand in order to be considered.

Concurrences, dissents, and remands are not normally efficient mechanisms for securing the “just, speedy, and inexpensive” resolution of an appeal before the Board. (Bd. R. 1). As indicated in the PAPs, a productivity credit is not automatically earned for a concurring opinion, dissenting opinion, or remand. Accordingly, justification is required to explain the need to undertake the extra work and occasion the extra delay in order to ensure efficient and proper utilization of our resources. Further, any credit given for a concurring opinion, dissenting opinion, or remand will be commensurate in scope with the justification provided and the scope of the extra work.

Please see Al or Jay if you have any questions.

Thanks,

Jay Moore
Allen MacDonald

====

The push for efficiency at the BPAI is also seen in the non-judge "patent attorney" program. Many of the BPAI opinions are now ghost written by newly minted patent attorneys and then signed by the BPAI judges. The real problem with this program is that when the patent attorneys are used, the BPAI judge is given a much higher throughput quota.

According to an anonymous observer - "the time constraints [under the Patent Attorney program] are so serious that for many cases, not a single one of the judges signing off on a decision will have read the underlying papers detailing the facts of the case." This observer asked to remain anonymous based on "the intolerance of dissent at the Board."

This need for efficiency is also the driver behind the still-pending BPAI appeal rule changes.

Bottom line here is that it will be helpful to have a patent office director who understands patents and who has been fully involved with all aspects of the patent system for the past twenty years. I believe that Kappos will be a careful shepherd of the system - leaving it better off in six years than it is today.

Kappos believes in the underlying value of innovation. In his words, "the whole system of innovation is more important now than ... ever." Beyond that, he is dedicated to a strong patent system and a strong patent office as mechanisms for fostering innovation. Kappos has been ready to try innovative approaches to "catch the intellectual property system up to the twenty first century." However, he has always been clear that his ideas for innovation "should in no way be confused with denigration or devaluing intellectual property." In addition, his years at IBM have taught him the value of consistency and tradition.

Much of the job of PTO director involves employee relations, and Kappos continues to successfully lead one of the largest private patent departments in the world. His current and former employees are loyal to him as a leader and praise his creativity and genius. The IBM IP office is known for its spirited and open debates on policy and direction. In my view, this corporate management experience and patent prosecution experience are more relevant to running the PTO than - say - running litigation teams at a law firm, managing a congressional committee, or even teaching a group of law students. Before moving forward, I want to note here that former Director Todd Dickinson is also an excellent choice, and he continues to be strongly supported by both examiners and other patent law professionals. Dickinson would almost certainly do the better job of healing the growing rift between examiners and applicants.

In his recent testimony to the Senate, Kappos put IBM's support behind the compromise form of the Patent Reform Act. For IBM, it was important that the damages portion of the bill be revised: "we must nevertheless be mindful of the fundamental importance of ensuring that patentees are appropriately compensated or the patent system will fail to provide the incentive innovators require." However, the IBM proposal was that royalties should be based on the "essential features" of a patent. (Quoting Quanta). This proposal is problematic because it would create new-rule uncertainty and also greatly favor holders of large patent portfolios (such as IBM). As director, Kappos should be careful to balance the "right" solution with the need for consistency and stability of rights. IBM also supported the post-grant review system (which I favor) and the venue changes (which I do not favor).

More than his alignment on specific provisions, we can hope that Kappos will bring an important amount of subject matter expertise - helping to ensure that any legislation does not inadvertently disrupt parts of the system that are already working well.

I do have other reservations. Patent pundit Greg Aharonian has oft complained about Kappos and his tendency to talk about patent quality and then charge forward with junky IBM patent applications. Those complaints have merit. The ill defined term 'patent quality' raises red flags in my mind. Here, Kappos has his benign and potentially helpful pet projects of dramatically improving examiner's access (and ease of access) to prior art; improving prior art and patent documents through more standard lexicons; and public collaboration in patent examination (IBM funded the peer to patent program). In the past, Kappos has talked about patent quality as a problem because it leads to a situation where "nobody has an earthly idea of what [a patent] is worth . . . creating a murky and unclear market." These are really proposals to make the prosecution system work more efficiently rather any fundamental changes to patent rights. IBM is good at systems, and Kappos may be as well.

If it is a benefit, it is also a fault that Kappos' blood is saturated with IBM knowledge and culture. Kappos joined IBM in 1983 right out of college (EE / UC Davis) and stayed with the company after law school (Berkeley). At IBM he spent time with the software legal division and also in the Asia/Pacific division. Unfortunately, in the past 25 years, Kappos may have forgotten that most of the world does not operate like IBM. Thus, when he says that "people no longer innovate individually" or that "many new innovations require investments of unprecedented size," I worry that his vision is skewed. Beyond the PTO, IBM has been able to use its large portfolio and market power to build a large licensing pool with very little litigation. Of course, there are few companies in a position to accomplish that result in today's market. It will be important for him to spend time understanding that - in fact - IBM is the atypical market player. On these point, I believe that Kappos will relax his views somewhat once he is no longer the AGC of IBM.

I am excited that Kappos will push the PTO toward a more open system - allowing access to data and information that has been hidden or limited and ready to cooperate on collaborative projects to streamline the system. Kappos has considerable experience with both European and Asian patent systems, and will likely expand cross-border examination collaboration.

On the software side, Kappos will continue to support the idea that software should be patentable - although he argues that patents should at least cover something "technological" and that business methods should be out. Kappos has also spent a lot of time thinking and working with overlapping intellectual property schemes and considering how those interplay with open source software. However, I have not seen any specific proposals.

In the Patently-O reader poll, Kappos earned only 5% of the vote, falling behind Todd Dickinson (36%), Prof Lemley (8%), and "other" (8%).

Other Sources:

• Why Kappos is Unfit
• IP Watchdog on Kappos
• From Greg Aharonian:
• "One rumored candidate to be the next Director of the Patent and Trademark Office is David Kappos, one of the head patent lawyers at IBM. Given IBM's many abuses of the patent system and patent policy over the past few decades, I think it is inappropriate, nay, wrong, for anyone from IBM to be head of the PTO. Might as well as make Bernie Madoff head of the SEC as part of his upcoming jail-time work-release program. IBM patent lawyers for too long have abused the patent system."
• "Case in point. Last week IBM was issued its usual batch of patents, many of which are crap - crappy patents whose sole value is to clog the PTO's patent examination pipelines to the detriment of everyone else. A patent application policy actively embraced by David Kappos. If I was an IBM investor, I would applaud David for doing his best to help IBM. In fact, sometimes I recommend people to buy IBM stock because the company will do anything to maintain its market value. Kudos to David for his efforts in this regard. But the reward for abusing the patent system for the benefit of IBM should be a gold watch at retirement - and should not be the reward of being appointed head of the PTO."